How This Entrepreneur Won a Trademark Battle Against the Trump Organization
by Marshall Childs
Posted on Friday Sep 22, 2017 at 10:00AM in Finance
In January 2011, Tom Scharfeld was riding high. The music app he built for trumpet players, called iTrump, was getting positive buzz. Teachers, composers and seasoned and aspiring musicians were using it to learn songs, refine compositions and practice on the go without their instruments.
The app got coverage in USA Today and was featured in Apple’s iTunes Store as “new and noteworthy” in 130 countries. It was the follow-up to a similar app Scharfeld created for trombone players, iBone, which also had been well received two years earlier.
By convention, it made sense to name the new app iTrump. However, Donald Trump didn’t seem to think so, and his representatives sent Scharfeld a cease and desist letter.
“The letter felt like a joke,” Scharfeld told Entrepreneur. “Here I am working on music apps, and a real-estate businessman from the 80's is demanding that we change the name. It really felt absurd.”
He responded with a letter of his own expressing his disagreement, making the point that the word “trump” is defined as “trumpet” in the dictionary, as well as used interchangeably with trumpet in the Bible. He also pointed out that his company is known for music, while the Trump Organization is not.
Scharfeld consulted with a lawyer. But very early on, he decided to represent himself, due in part to the attendant costs and time commitment of getting involved in litigation with a large entity such as the Trump Organization. While the process was a taxing one, Scharfeld’s approached it as methodically as possible to avoid any legal errors or mistakes. He wasn’t about to cave under the pressure, and as the founder of a one-man operation, he was used to handling everything himself.
“I did a great deal of research both online and in public law library. On rare occasion, I spoke with a lawyer,” Scharfeld says. “I had read the stories of the little guy giving in to the big guy’s demands. I always hated those stories. And, I felt that if I did the same, I'd merely be part of the problem, when I'd rather be part of the solution. Even though mounting a proper defense would take time away from my main business, it would still be a way to make a contribution.”
Although it was time consuming, Scharfeld says he thinks the act of representing himself helped his cause in the courtroom. “[It was] an advantage in that, not only was I saving the cost, but I also had more control and familiarity. And to Trump's lawyers, presumably used to dealing with lawyers, I was more unpredictable,” he says. “I felt that the facts and law were on my side, and that Trump’s claims were ridiculous. So, barring any mistakes, I felt I would prevail.”
In August 2017, the legal dispute ended in Scharfeld’s favor after four court proceedings. “Trump brought the first against us in attempt to block our trademark registration from issuing,” says Scharfeld, who won his trademark registration in 2013 but kept fighting to ensure that the Trump Organization would not block others who wanted to rightfully use the word trump. “We brought the subsequent three against Trump.”
While it may not be on the scale of Scharfeld’s experience, any small business can get embroiled in a legal conflict with a bigger brand. So what should you consider if this happens to you?
“You will need to understand whether there is any merit to your adversary’s claims. Are they right? Are you right? Are they just trying to bully you?” Scharfeld explains. “Unless your marks and goods and services are identical, and unless they’re simply out to get you, you may be able to come up with some sort of acceptable arrangement. You should plan for multiple courses of actions, [for example] settling and litigating, or some combination. Your adversary will likely expect you to ‘go away easily’ and may be more willing to settle after you’ve put up a fight.”
Ultimately, Scharfeld says his best advice is to do your research, question everything, be resourceful and find the best help for your situation. Once you have that information in hand, think very carefully about how to comport yourself and what outcome you are willing to live with -- then go to bat for it with everything you’ve got.
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